The luxury house had sued an artist for trademark infringement following the release of NFT versions of the iconic bag.
A Manhattan federal judge on Friday granted Hermes’ request to permanently block sales of artist Mason Rothschild’s non-fungible “MetaBirkin” tokens following a jury verdict that they violated the French luxury house’s trademark rights in its famous Birkin bags.
US District Judge Jed Rakoff said the permanent injunction was justified because the Rothschild’s continued commercialization of NFTs would likely confuse consumers and irreparably harm the company.
Rakoff denied Rothschild’s requests to vacate the verdict or hold a new trial.
“Defendant’s entire scheme here was to defraud consumers into believing, through the use of variations of Hermes’ trademarks, that Hermes was endorsing its lucrative NFT MetaBirkins,” Rakoff said. “Nothing in the First Amendment insulates you from liability for such a plan.”
Representatives for Hermes and Rothschild did not immediately respond to requests for comment on the decision.
NFTs are unique tokens on blockchain networks that are often used to verify ownership of digital art. Hermes sued Rothschild last year over its MetaBirkins, 100 NFTs associated with images showing the luxury house’s prized Birkin bags covered in colored furs.
Hermes called Rothschild a “digital profiteer” and NFTs a “get-rich-quick” scheme that infringed its “Birkin” trademark and created the false impression that the fashion house endorsed the tokens.
Rothschild, whose legal name is Sonny Estival, countered that the works were an absurd statement on luxury goods and immune from lawsuit based on the US Constitution’s First Amendment protections for art using trademarks. copyrighted in an artistically relevant way without explicitly misleading consumers. .
A jury found in favor of Hermes in February, awarding the company $133,000 in damages.
Hermes said in a filing in March that Rothschild continued to trade its NFTs after the jury’s verdict. He asked the court to make him stop and hand over his remaining chips and post-trial winnings.
Rothschild told the court that Hermes’ request went “far beyond what is appropriate in a case, such as this, involving artistic expression.”
Rakoff largely acquiesced in Hermes’s request, but decided not to order the Rothschild to transfer the tokens out of an “abundance of caution” over First Amendment concerns.
